USPTO Patents Application 10727454

U.S.S.N. 10/727,454
Attorney Docket No. HES 2003-IP-010346U1

REMARKS

L General Remarks

The application has been reviewed in light of the Final Office Action mailed
December 6, 2005 and the Advisory Action mailed February 16, 2006. At the time of the
Advisory Action, claims 1-43 were pending in this application. Claims 1, 29, 34, and 39 have
been amended herein. Claims 11-28 have been cancelled herein, and claims 44-57 have been
added as new claims.

Claims 1- 43 stand rejected in view of prior art. For the reasons discussed below,
the Applicants believe that all of the remaining claims are patentable over the cited prior art, and
therefore respectfully traverse the Examiner's rejection.
IL Amendments to the Specification

Paragraphs [0014]-[0018] have been added to the Specification. Antecedent basis
for these paragraphs may be found in U.S. Patent Application No. 10/728,295. The specification
of this copending application has been incorporated by reference in full into the present
disclosure, and as such forms part of the present disclosure. See Present Application, para.
[0028]. The Manual of Patent Examining Procedure explains that matter copied into an
application from another application that has been incorporated by reference is not new matter as
follows:

Instead of repeating some information contained in another
document, an application may attempt to incorporate the content of
another document or part thereof by reference to the document in
the text of the specification. The information incorporated is as
much a part of the application as filed as if the text was repeated in
the application, and should be treated as part of the text of the
application as filed. Replacing the identified material incorporated
by reference with the actual text is not new matter.

M.P.E.P. § 2163.07(b). Accordingly, Applicants respectfully submit that no new matter has been

added by this amendment. See MPEP §§ 608.01(p)(I), 2163.07(b).

III. Remarks Regarding 35 U.S.C § 103(a) Rejections

None of the Cited References Teach or Suggest Each and Every Limitation of the
Amended Claims

Claims 1-6, 8-13, 15-19, and 21-38 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over either U.S. Patent 6,425,448 issued to Zupanick et ah (hereinafter
"Zupanick") or in view of U.S. Patent 5,547,023 issued to McDaniel et ah (hereinafter

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U.S.S.N. 10/727,454
Attorney Docket No. HES 2003-IP-010346U1

"McDanier). Claims 7 and 20 stand rejected under 35 U.S.C. § 103(a) as being obvious over
Zupanick in view of McDaniel and further in view of U.S. Patent Publication 2002/0170712
issued to Milne et ah [hereinafter Milne]. Claims 14 and 39-43 stand rejected under 35 U.S.C. §
103(a) as being obvious over Zupanick in view of McDaniel and further in view of U.S. Patent
Publication 2003/0062198 issued to Gardes et ah [hereinafter Gardes]. Claims 1 1-28 have been
cancelled and are therefore no longer relevant to these rejections.

Applicants traverse on the basis of the amended claims. A prima facie case of
obviousness requires a showing that all claim limitations be taught or suggested by the art.
M.P.E.P. § 2143.03. Applicants respectfully submit each of the above-cited combination of
references fails to form a proper basis for a prima facie case of obviousness, because each
combination fails to teach all of the limitations of the claimed invention.

In particular, as to independent claims 1, 29, 34, and 39, the cited references do
not contain any teaching of "optimizing a number, placement and size of a plurality of fractures
in the subterranean formation so as to determine a maximum interference spacing between the
plurality of fractures by (a) determining one or more geomechanical stresses induced by each
fracture based on the dimensions and location of each fracture, (b) determining a geomechanical
maximum number of fractures based on the geomechanical stresses induced by each of the
fractures, and (c) determining a predicted stress field based on the geomechanical stresses
induced by each fracture."

Thus, for at least these reasons, each of the above-cited combination of references
fails to teach each and every limitation of Applicants' claims. Thus, Applicants respectfully
request the removal of the 35 U.S.C. § 103(a) rejection as to the independent claims 1, 29, 34,
and 39 and correspondingly, dependent claims 2-10, 30-33 and 35-43.
IV. Remarks Regarding New Dependent Claims 44-57

Although no rejection has been made to dependent claims 44-57, to advance
prosecution of these claims, Applicants observe that none of the cited prior art references supply
all of the limitations recited in Applicants' claims 44-57. In particular, all of these newly added
dependent claims depend, either directly or indirectly, from independent claim 1, which as
Applicants have argued above in Section III, should be allowable. Thus, Applicants respectfully
request that these claims be passed to issuance.

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Attorney Docket No. HES 2003-IP-010346U1

V. No Waiver

All of Applicants' arguments and amendments are without prejudice or
disclaimer. Additionally, Applicants have merely discussed example distinctions from the cited
references. Other distinctions may exist, and Applicants reserve the right to discuss these
additional distinctions in a later Response or on Appeal, if appropriate. By not responding to
additional statements made by the Examiner, Applicants do not acquiesce to the Examiner's
additional statements. The example distinctions discussed by Applicants are sufficient to
overcome the anticipation and obviousness rejections.

SUMMARY

In light of the above remarks, Applicants respectfully request reconsideration and
withdrawal of the outstanding rejections. Applicants further submit that the application is now in
condition for allowance, and earnestly solicit timely notice of the same. Should the Examiner
have any questions, comments, or suggestions in furtherance of the prosecution of this
application, the Examiner is invited to contact the attorney of record by telephone, facsimile, or
electronic mail.

The Commissioner is hereby authorized to debit the Deposit Account of
Halliburton Energy Services, Inc., No. 08-0300 in the amount of $790.00 for the RCE fee under
37 C.F.R. § 1.114. Applicants believe that no additional fees are due in association with the
filing of this Response. However, should the Commissioner deem that any additional fees are
due, including any fees for extensions of time, the Commissioner is authorized to debit the
Deposit Account of Halliburton Energy Services, Inc., No. 08-0300, for any underpayment of
fees that may be due in association with this filing.

Respectfully submitted,

Date: February 27, 2005

Robert A. Kent
Registration No. 28,626
Halliburton Energy Services, Inc.
2600 South Second Street
P.O. Drawer 1431
Duncan, OK 73536-0440
Telephone: 580-251-3125

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